Music Publisher Gets Holiday Gift: Continued Ownership Of “Santa Claus Is Coming To Town”
by Jerry Glover
December 25, 2013
During this holiday season, it really warms your chestnuts when one of the largest music publishers on earth, EMI, gets to retain copyright ownership in one of the season’s classic songs: “Santa Claus Is Coming to Town.” Baldwin v. EMI Feist Catalog, Inc., No. 122CV9360 (S.D.N.Y. December 16, 2013). This case shows how important it is for copyright grantors to following each and every one of the termination requirements of the Copyright Act.
The song was written in 1934. In that same year, the song’s composer assigned to EMI’s corporate predecessor the copyright in the song. At that time, the U.S. Copyright Act granted a term of 28 years to copyrightable works. That initial term could be renewed for an additional 28 years for a total of 56 years of copyright protection. In 1951, the song’s composer granted EMI renewal rights to the song. The song’s copyright was renewed by EMI in 1961 thereby extending the song’s copyright protection into 1990.
Congress then extended the copyright term twice—once in 1976 for 19 additional years and once again in 1998 for an additional 20 years. Today works created before 1978 that were still protected by copyright at the time the 1976 Copyright Act was enacted have protection that extends 95 years from the date of publication/registration. So “Santa Claus” had protection through 2029 (1934 plus 95 years).
In September of 1981, the composer sent EMI a notice to terminate the 1951 renewal agreement and set an effective termination date of October 23, 1990. Despite the termination notice, the composer, the composer’s children and EMI entered into an agreement in December, 1981 which granted EMI all rights in the song during the additional 19 years the Copyright Act had granted to pre-1978 works thus granting EMI rights to the song through 2009. In exchange for that grant of additional time, EMI paid the composer and his heirs a $100,000 bonus. The agreement stated that the composer/heirs had registered the notice of termination with the Copyright Office; in fact, the notice of termination was never filed with the Copyright Office.
Several other termination notices were sent to EMI by the composer’s heirs: 2004, 2007 and 2012.
The 2004 notice was given pursuant to Section 304(c) of the current Copyright Act (17 U.S.C. Sec. 304(c)) which allows authors and their heirs to terminate a copyright grant that was made prior to 1978 (the effective date of the current Copyright Act). If grants are not terminated pursuant to Section 304(c), then the grant remains in effect. The termination is effective only if the termination notice is filed with the U.S. Copyright Office before the termination date unless the original grant provided otherwise. If the recordation does not occur, the grantee’s rights continue through the renewal term.
The other two termination notices were sent pursuant to a different section of the Copyright Act—Section 203. Both notices identified the 1981 agreement as the only agreement being terminated.
EMI claimed that the termination of the 1951 agreement was ineffective because the composer’s heirs did not record the written termination notice in the Copyright Office. The court agreed noting that the statute required the termination notice to be field to “effect” termination. Since the notice was not field, the court stated that EMI would continue to hold the copyright for the entire 95 year copyright term ending in 2029.
The heirs argued that the 2007 and 2012 termination notices terminated the 1951 agreement as well. But the court noted that each of these notices was filed pursuant to Section 203 of the Copyright Act which applies only to post-1978 rights. The court held that the heirs could not try to end the grant of rights to EMI under this section of the Act because they were unable to terminate the grant under Section 304 for failing to file the termination notice, a tactic the court labeled as trying to take “a second bite of the apple.”
So the heirs will have to continue their reliance on EMI for royalties until 2029.